A patent opposition is a legal procedure that allows third parties to challenge the validity of a patent application before or after it is granted, by alleging non-compliance with the requirements of patentability.
This mechanism varies significantly across jurisdictions. In Europe, opposition before the European Patent Office (EPO) must be filed within nine months after the grant of the patent. In the United States, the “Inter Partes Review” (IPR) system before the U.S. Patent and Trademark Office (USPTO) allows third parties to challenge the validity of already granted patents. In Japan, the opposition system is less common, and patent disputes are usually resolved through litigation in the Courts. In China, the invalidation procedure before the China National Intellectual Property Administration (CNIPA) allows third parties to request the revocation of a patent within a specific period. Each jurisdiction has its own timeframes, criteria, and procedures, reflecting differences in their legal systems and approaches to intellectual property.
In Chile, the opposition procedure is governed by the Industrial Property Law (Law No. 19.039). It is an administrative action carried out before the Patent Office (INAPI), during the prosecution of the patent application.
Once the formal examination is completed, the patent application is published in the Official Gazette. With this publication, the opposition period begins, and any third party who considers that the invention does not meet the legal requirements for patentability may file an opposition within 45 business days.
In Chile, filing an opposition does not require payment of any official fee. It consists of a written submission to the PTO, detailing the grounds on which the application should be rejected.
Once the opposition period ends, the PTO reviews whether the opposition meets the formal requirements, such as compliance with the deadline and legal representation by an attorney. Additionally, regardless of whether an opposition has been filed, the applicant must proceed with the payment of the substantive examination fees within 60 business days from the notification issued by the PTO. If this payment is not made, the patent application will be considered abandoned.
If the aforementioned formal requirements are met, the PTO will notify the patent applicant of the opposition, granting 45 business days to respond. Although there is no obligation to respond, and failure to do so does not imply rejection of the application, it is highly recommended to submit a reply so that the expert can take the applicant’s position into consideration when preparing the report.
It is important to note that once the adversarial phase of the opposition ends, the expert will carry out the technical examination, and their report will consist of two parts: one addressing the opposition itself, and another evaluating whether the invention meets the requirements of novelty, inventive step, industrial applicability, and sufficient disclosure.
Subsequently, the PTO will issue its decision granting or rejecting the patent application, which may be appealed before the Industrial Property Court within 15 business days.
